I once spent 20 minutes trying to figure out whether I was installing a metal insert for an NYMÖ lamp upside down, or rightside up. I’m still not sure I ever installed it correctly, but it’s still working. So there. But a new IKEA översittare is getting a lot of attention on the internet, and it seems to be just as confusing. What is the översittare? It’s not Swedish for standing desk, sliding table, or uncomfortable couch. No, översittare is Swedish for bullies (at least according to Google Translate).
IKEA is following in the footsteps of Chick-Fil-A, Starbucks, Skee Ball, New York, Nutella, and others in joining the not-so-inner circle of companies accused of bullying small businesses and individuals with “false” claims of trademark infringement. You see, for eight years “Jules” (a pseudonym) has operated a website called IKEA Hackers. Apparently people have been taking their IKEA products and modifying (or “hacking”) them to create other surprising, useful, or interesting pieces of furniture or artwork. Some are pretty impressive, some are surprisingly useful, and some… exist. Jules has been gathering and indexing these how-to instruction videos/lists at her www.ikeahackers.net website for nearly eight years without complaint from IKEA. At some point in the recent years, she also began including advertisements on the site to help compensate her for her time and costs. And then came the cease and desist letter (also, here).
While the Wall Street Journal and the Washington Post take a balanced approach, the most cited reports come from bloggers who aren’t quite so, well, “balanced.” Two main articles feature the headlines “Ikea bullies Ikeahackers with bogus trademark claim” and “It Took 8 Years for IKEA To Get Around To Being A-Holes to IKEAhackers.” In one of the writer’s eyes, “Ikea’s C&D is, as a matter of law, steaming bulls–t.” And if you think those are strong words, you should read some of the comments. With such strong opinions, IKEAHackers must be a pretty clear-cut case of bullying. Plus, shouldn’t IKEA be happy that so many people are interested in (and purchasing) their products?
That got me thinking: is it really a steaming pile of Bull? So I visited the website and noticed the large IKEA HACKERS logo, in the same IKEA yellow and blue colors, at the top of the page. I also noticed the following image :
You may recognize our little friend. You know, the IKEA man from all the assembly manuals. That link leads to an official IKEA Hackers Amazon Store (I knew that cart looked familiar), where IKEA Hackers sells “new, used, and even better” “IKEA items.”
Based on the foregoing, I ran through a checklist of common defense to trademark infringement claims:
1) Descriptive fair use: This is the “Classic Fair Use” test. If the mark has a descriptive meaning, the owner of the trademark can’t prevent others from using the mark in its primary descriptive sense. For example, even though Zatarain’s owns a trademark for FISH-FRI, they cannot prevent others from describing their “fish fry” product as “fish fry.” IKEA is not a descriptive term, so this defense does not apply.
2) Nominative Fair Use: This defense allows parties to refer to a trademark as a noun when necessary. As in, “We sell used Lexus® cars.” It is not a clear doctrine, but the use by IKEAHackers appears to go well beyond what would be a nominative fair use. The website uses IKEA HACKERS as the website name and as a mark, it does not just refer to IKEA® furniture in the nominative sense.
3) Free speech: Courts have sometimes employed the Rogers v. Grimaldi test to determine whether use of a trademark is not an infringement. It applies only to expressive works (art, books, movies, etc.). IKEA Hackers is not (at least only) an expressive work and likely would not be eligible for such protection.
None of these three defenses appear to be applicable, but that doesn’t mean that the IKEA Hackers’ use is infringing. As far as I can tell, the actual demand letter and the subsequent negotiations/agreement have not been made public. Because of this, it is difficult to determine the exact claims and demeanor involved. What is clear though is that Jules is using IKEA Hackers as a mark at least for the website, and for an online retail store that sells identical goods (although, used goods).
The website isn’t a clear infringement, but it also isn’t “steaming bulls–t” as a matter of law. IKEA had reasonable justifications to send its cease and desist letter, regardless of whether social media and bloggers agree. We should all be weary of companies overreaching with their trademark rights – this just doesn’t appear to be one of those situations.